The Complainant is Virgin Enterprises Limited and Virgin Limited Edition of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Shubab Consult of Nanterre, France and New York City, New York, United States of America (“United States”).
The disputed domain name (the “Domain Name”) <bvineckerisland.com> is registered with NameCheap, Inc. (“NameCheap”) (a “Registrar”).
The Domain Names <necekrislandresorts.com> and <thevirginhyperloopone.com> are registered with OwnRegistrar, Inc. (“OwnRegistrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On October 1, 2018, the Center transmitted by email to both Registrars requests for registrar verification in connection with the Domain Names. On October 2 and 3, 2018, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 6, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant Virgin Enterprises Limited (“Virgin Enterprises”) is a private limited company established under English law and based in London, United Kingdom. Virgin Enterprises operates, through subsidiaries, various businesses under the Virgin trade name, including an airline, music record “megastores”, and an Internet information service. Virgin Enterprises operates several websites using the “Virgin” name, including “www.virgin.com” (since 1999), which attracts millions of visitors annually, from more than 230 countries.
The Complainant Virgin Limited Edition (“VLE”) is a private limited liability company established under English law, also based in London, which develops and operates holiday retreats and luxury hotels around the world. One of these is Necker Island in the British Virgin Islands (“BVI”). VLE operates a website at “www.virginlimitededition.com” with pages for the Necker Island resort at “www.virginlimitededition.com/en/necker-island”.
Virgin Enterprises and VLE are both members of the Virgin Group of companies, which originated in 1970 when Richard Branson began selling music records under the VIRGIN mark. The Virgin Group has expanded into a wide variety of businesses that use the VIRGIN mark under license. The Complainant Virgin Enterprises is the trademark owner for the Virgin Group. According to the Complaint, the Virgin Group currently comprises over 60 businesses worldwide, operating in 35 countries in Europe and Australasia, as well as in the United States, with more than 69,000 employees and annual group revenues exceeding GPB 16.6 billion. The record establishes that the VIRGIN brand is heavily advertised in Europe and North America and is associated with sponsored events and media stories. It has also been recognized in multiple publications as a leading brand in the United Kingdom.
In 2017 the Virgin Group invested in the Hyperloop One project, forming Virgin Hyperloop One, a company based in Los Angeles, California, United States to develop and commercialize the technology for a high-speed transportation system using pods propelled by magnets that travel in frictionless tubes. The Hyperloop project, and Virgin’s involvement, have been highly publicized, as shown in attachments to the Complaint and the company’s website at “www.hyperloop-one.com”.
The record shows that the Complainant Virgin Enterprises holds numerous trademarks consisting of, or incorporating the name “Virgin”, often with an additional element such as VIRGIN ATLANTIC, VIRGIN MONEY, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES. Trademark registrations relevant for the current proceeding include the following:
|
MARK |
JURISDICTION |
REGISTRATION NUMBER |
REGISTRATION DATE |
|
VIRGIN |
United Kingdom |
UK00001009534 |
April 11, 1973 |
|
VIRGIN |
European Union |
217182 |
September 4, 1998 |
|
VIRGIN |
United States |
4176062 |
July 17, 2012 |
|
VIRGIN ATLANTIC |
United States |
2808270 |
January 27, 2004 |
|
VIRGIN UNITE |
United States |
3472228 |
July 22, 2008 |
The Complainant VLE claims unregistered rights in NECKER ISLAND as a trademark. According to the Witness Statement of VLE Legal Manager Thomas Storer, attached to the Complaint, Richard Branson purchased Necker Island, an uninhabited island in the British Virgin Islands, in 1978, on the condition that he develop a resort within four years. Mr. Branson did so, and VLE operates the resort, advertised as “Sir Richard Branson’s private island paradise”, as part of the VLE portfolio. NECKER ISLAND is publicized on the VLE website and on YouTube and Facebook. Bookings for rooms, weddings and other events, or for the entire island are taken on the VLE website. Numerous media stories have featured NECKER ISLAND and its celebrity guests (including Nelson Mandela, Princess Diana, Barack and Michelle Obama, Kate Moss, and Kate Winslett), and the BBC produced a 2014 documentary entitled “Billionaire’s Paradise: Inside Necker Island”. The record and search engine results show that “Necker Island” appears as a “luxury hotel” or “resort” in numerous travel directories and applications. NECKER ISLAND featured in many news stories in 2011 when the Great House burned down and was rebuilt, and again in 2017 when the island was devastated by Hurricane Irma and most structures had to be rebuilt. As explained on the VLE website and social media pages, and the Wikipedia article “Necker Island”, the island is usually rented in total with accommodations for about 30 people, served by a private chef, a support staff of about 100 people, and with access to tennis courts, beaches, and water sports. Individual rooms are rented during certain weeks each year, and Virgin hosts an annual Necker Cup tennis tournament on the island.
According to the respective Registrars, the Domain Name <bvineckerisland.com> was registered on July 19, 2018, and the Domain Names <necekrislandresorts.com> and <thevirginhyperloopone.com> on September 4 and 5, 2018, respectively, all in the name of the Respondent Shubab Consult. The Respondent’s postal address is given as a location in New York City in the first registration and as an address in Nanterre, France in the latter two registrations, using the same Gmail email address for all three. The Panel notes that no legal entity with such a name appears in the database of registered foreign and domestic companies operated by the New York State Division of Corporations or in the French registered company database at “www.sirene.fr”.
According to the Complaint, the Complainants became aware of the Domain Name <bvineckerisland.com> when they were contacted by an individual who received an email in July 2018 from “[...]@bvineckerisland.com”, falsely claiming to be Sir Richard Branson and inquiring about a memorandum of understanding. This email was not written or authorized by Sir Richard Branson or the Virgin Group. At that time, the Domain Name resolved to a website that mimicked VLE’s official web page for the Necker Island resort at “www.virginlimitededition.com/en/necker-island”, except that the contact details had been changed. Similarly, the website formerly associated with the Domain Name <necekrislandresorts.com> was a replica of the VLE Necker Island web page except for the contact details. The Complainants discovered the Domain Name <thevirginhyperloopone.com> by conducting a reverse WhoIs search for the Respondent, finding an associated website that was a replica of the official Virgin Hyperloop One website at “www.hyperloop-one.com” except for the contact details. The Complaint attaches screenshots of the websites formerly associated with the three Domain Names.
At the time of this decision, none of the Domain Names resolves to an active website.
The Complainants assert that the Domain Names <bvineckerisland.com> and <necekrislandresorts.com> are deliberately and confusingly similar to the Complainant VLE’s unregistered NECKER ISLAND mark and that the Domain Name <thevirginhyperloopone.com> is confusingly similar to the Complainant Virgin Enterprises’ registered VIRGIN and VIRGIN HYPER trademarks. The Complainants argue that the Respondent has no permission to use any of the Complainants’ marks and otherwise lacks rights or legitimate interests in any of the Domain Names.
The Complainants observe that the Respondent was clearly aware of the Complainants’ business and marks, creating replicas of the Complainant’s websites and at least one fraudulent email, in an apparent attempt to deceive others, presumably for commercial gain. The Complainants conclude that this conduct manifests bad faith in the registration and use of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.
Both Complainants in this instance are part of the Virgin Group of companies, and the Complainant Virgin Enterprises licenses the use of the VIRGIN marks to other members of the Group, including the Complainant VLE, which is a necessary party because of its assertion of common law rights in using the NECKER ISLAND mark. The same Respondent appears to have registered each of the Domain Names, and the Complainant seeks to establish that they all reflect a common pattern of targeting marks used by the Virgin Group, creating replica websites with modified contact details, presumably in preparation for fraudulent activity.
The Panel finds that the Complainants have a common grievance against the Respondent and that it is equitable and efficient to permit the consolidation of their complaints in this proceeding.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7.
The Complainant Virgin Enterprises indisputably holds registered VIRGIN and VIRGIN HYPER trademarks, which are entirely incorporated in the Domain Name <thevirginhyperloopone.com>. The addition of the article “the” in the Domain Name does not avoid confusing similarity, nor do the dictionary words “hyperloop” and “one”, the Panel notes that those words are also publicly associated with the Complainants in connection with the “Virgin Hyperloop One” project, company, and website. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id. Thus, the Panel finds that the Domain Name <thevirginhyperloopone.com> is confusingly similar to the VIRGIN and VIRGIN HYPER trademarks for purposes of the first element of the Policy.
The Complainants assert unregistered trademark status for NECKER ISLAND. The Policy does not require a registered trademark, but to establish unregistered or common law trademark rights in a UDRP proceeding, the complainant must show that the mark has become a distinctive identifier that consumers associate with the complainant’s goods or services. See WIPO Overview 3.0, section 1.3. Relevant evidence demonstrating such acquired distinctiveness or “secondary meaning” can include the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, and the degree of public recognition. Id. NECKER ISLAND sales data are lacking in this record, but the record includes substantial documentation of advertising and public recognition since the 1980s. The record shows that Necker Island was uninhabited, undeveloped, and little frequented before Mr. Branson and Virgin came on the scene, constructing not only a residence for Mr. Branson but a luxury resort with amenities for both invited and paying guests. NECKER ISLAND has been advertised and reviewed online for decades as a luxury resort and events locale. The Panel finds persuasive evidence on this record that, for the purposes of the Policy, the name has been used in commerce over time by the Complainant and has acquired distinctiveness internationally in a relevant market for luxury resort guests and events planners. Therefore, the Panel finds that the Complainant VLE has rights in NECKER ISLAND as an unregistered mark for purposes of the first element of the Policy.
The Panel finds that the Domain Name <bvineckerisland.com> is confusingly similar to the Complainant VLE’s common law NECKER ISLAND mark. The Domain Name incorporates the mark in its entirety and prefixes “BVI”, a standard abbreviation for British Virgin Islands, the jurisdiction where Necker Island is located, which in no way avoids a finding of confusing similarity. The Panel also finds confusing similarity with the Domain Name <necekrislandresorts.com>, which is patently an instance of “typosquatting”, transposing the letters “e” and “k”, adding the generic word “resorts”. As NECKER ISLAND is, in fact, a commercial resort, this additional word also does nothing to avoid confusing similarity.
In addition, the Panel notes that the overall facts and circumstances of the case support a finding of confusing similarity, particularly as it appears that the Respondent registered the disputed domain names precisely because it believed that the disputed domain names were confusingly similar to the abovementioned trademarks of the Complainant. See WIPO Overview 3.0, section 1.7.
Finding confusing similarity in the case of all three Domain Names, the Panel concludes that the first element of the Policy has been established.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has established a prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use, a corresponding business or brand name, or other evident legitimate interest. This shifts the burden to the Respondent. The Respondent has not replied, and its conduct in copying the Complainants’ websites and misrepresenting itself in contact details and an email does not suggest any rights or legitimate interests in the Domain Names.
Accordingly, the Panel concludes that the Complainants have established the second element of the Policy.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The record shows that the Respondent used one of the Domain Names for an email impersonating the head of the Virgin Group. The Respondent may have sent other such emails, which were disregarded rather than reported to the Complainants. The Respondent also copied the Complainants’ websites but changed the contact details. It is not known whether the websites formerly associated with the Domain Names were meant merely to lend credibility to targeted “spear phishing” emails or to separately attract prospective customers or fraud victims as well. The false contact details on those Respondent websites would serve to misdirect anyone who attempted to communicate with the Complainants, presumably for commercial gain. The Respondent has since taken down the websites and has not replied to communications from the Complainants or the Center. The Respondent has not offered an explanation for its conduct, and the Panel can find no plausible, legitimate reason to create replicas of the Complainant’s websites, with changed contact details, and to impersonate the leader of the Virgin Group.
The Panel concludes, therefore, that the Complainants have established the third element of the Policy, bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <bvineckerisland.com>, <necekrislandresorts.com> and <thevirginhyperloopone.com> be transferred to the Complainants.
W. Scott Blackmer
Sole Panelist
Date: November 22, 2018